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PATENTS. 



A PRIMER OF PATENT LAW, 



FOR 



INVENTORS AND MANUFACTURERS. 



WITH TABLES OF TERMS OF AND FEES FOR 

PATENTS IN ALL PATENT-GRANTING 

COUNTRIES. 



BY 



WILLIAM H. FINOKEL, 

(Solicitor of Patents.) 




637 F STREET, NORTHWEST, 
Washington, D. C. 






COPYRIGHT, 1888, 

BT 

WILLIAM H. FINCKEL. 



c?0--/75c/ 



INTRODUCTION. 



An experience in the business of a solicitor of pat- 
ents continuing since 1869, has induced me to believe 
that the following pages will answer a great many in- 
quiries of inventors and owners of patents respecting 
the operations of the patent office, what is and what is 
not patentable invention, and the different kinds of 
protection afforded by the patent law. 

I have tried, also, to state in a brief and comprehen- 
sive manner the question of fees ; and have outlined in 
a general way the matter and costs of foreign patents, 
poinding out the w T ay to obtain foreign patents so that 
they will not abridge the life of the United States 
patent, and, reciprocally, they wiirnot be impaired or 
invalidated by the United States patent. 

Some suggestions are offered also, which have been 
found of value in developing and proving the history 
of an invention ; and a word of warning added as to 
purchasing patents. 

I have endeavored to avoid, on the one hand, writing 
a mere advertisement of myself, and on the other, 
presenting a purely legal treatise; and while the " eye 
to business "has not been shut, still the hope is ex- 
pressed that these pages may be found by inventors 
and others interested in patents, to have intrinsic merit, 
and to be helpful in appreciating the value and im- 
portance of the most admirable system of American 
patent law. WILLIAM H. FINCKEL. 

Washington, D. C, March, 1888. 
(3) 



CONTENTS. 



PAGE 

Introduction. 

Organization of the United States Patent Office 7 

Commissioner and Assistant Commissioner 7 

Examiners 7 

Examiner of Interferences 8 

Board of Examiners-in-Chiel 7 

Course of Application through the Patent Office and to 
grant 8 

Part I. What is and what is not invention under the United 

States Patent Law 10 

Novelty 10 

Utility 11 

Part II. Who is an Inventor 12 

Sole 13 

Joint 13 

Not one who merely contributes money 13 

Property in inventions is statutory 14 

Assignee 14 

Part III. Patentability. Interference. Infringement 15 

Patentability 15 

Interference 16 

Infringement 16 

Infringement and patentability distinguished 17 

Interference and infringement distinguished 17 

Part IV. Patents. Disclaimers. Reissues 18 

Part V. Designs 19 

Part VI. Trade-marks. Labels or Prints. Copyrights 20 

Part VII. Caveats 21 

Part VIII. General Observations 22 

No inherent or natural right to inventions , 22 

Marking patented articles, etc 23 

Investigation before purchasing patents 23 

Convention lor the Protection ot Industrial Property.. 24 
Hints to inventors 26 

(6) 



PAGE 

Summary and Advertisement. 28 

Kinds ol patent protection 28-31 

.Fees 28-31 

Costs of appeals 31 

Costs of interferences 32 

Foreign Patents 32 

General observations 32 

Duration of grants 33-35 

Minimum costs 33-35 

Trade-marks and designs 36 

Card 



PATENTS. 



PRESENT ORGANIZATION OF THE UNITED STATES 
PATENT OFFICE. 

The head of the office is the Commissioner of Pat- 
ents, with an Assistant Commissioner taking his place 
when absent, or when specially designated to act as 
Commissioner. The Commissioner does not perform 
any duties respecting the granting of patents, except- 
ing where individual cases come to him on appeal, and 
the signing of the grants. He has general supervision 
of the office in all its branches, and all questions aris- 
ing in the practice of the office are referable to him, 
more or less directly, for decision. But there are com- 
paratively few cases that ever come before him, and 
the bulk of the work of examining and allowing or 
rejecting applications, is done by the examiners. 

Inventions of all kinds are distributed by kinds or in 
classes among twenty-nine principal Examiners, who 
are heads of examining divisions, and pass upon the 
patentability of inventions, but have no jurisdiction 
of the question of infringement, that question being 
relegated by the statute to the courts. Each principal 
Examiner has a corps of assistants. Erom the adverse 
decisions of these Examiners, appeal lies to a Board 
of three Examiners-in-chief, and from this Board ap- 
peal lies to the Commissioner of Patents in person, and 

(7) 



8 

from him to the Supreme Court of the District of 
Columbia, and then to the Supreme Court of the 
United States. 

One of the principal Examiners has charge also of the 
examination of trade-marks, and labels and prints; 
and another passes upon the patentability of all de- 
signs. 

An Examiner of interferences first tries cases of con- 
flicting or interfering applications for registration of 
trade-marks, applications for patents and reissue of 
patents, and for designs, and from his decision appeal 
lies to the Board of Examiners-in-chief, and from them 
to the Commissioner in person. 

The clerical work of the office, under a chief clerk, 
is subdivided appropriately to insure promptness, uni- 
formity and accuracy. 

Further on more of the details of the functions and 
working of this organization will be stated. 

Applications are examined in the order of their fil- 
ing, but as there are twenty-nine examining divisions, 
there are also as many orders of examination. Hence 
it constantly occurs that patents are granted by one ex- 
amining division which were filed months after others 
in other divisions. Some examining divisions have and 
keep their work well up to date, while others are many 
months behind. 

The solicitor or applicant can do nothing to hasten 
examination. The only cases examined out of turn 
are those previously patented abroad, and those re- 
commended as urgent by the head of some depart- 
ment of the government. 

When an application for patent is filed in the Patent 
Office, it is examined in the " application room " to see 
that it is complete in all its parts, when it is sent to 



9 

the proper examining division, and there awaits its 
turn for examination. When reached for examination 
the Examiner inquires into the novelty and utility of 
the invention, cites any references he may find im- 
peaching its novelty, and is presumed in his first action 
to make all the objections to the case which in his 
judgment apply. Applicant then is at liberty to 
amend, or to refuse to amend. So long as any new 
references are cited, applicant may amend, but when 
the Examiner rejects finally, then applicant's remedy is 
by appeal to the Board. 

The Patent Office rule relating to amendments, in 
respect to what they may contain, is as follows : 

"69. In original applications, which are capable of illustration 
by drawing or model, all amendments of the model, drawings, 
or specification or of additions thereto must conform to at 
least one of them as they were at the time of the filing of the 
application. Matter not found in either involving a departure 
from the original invention can he shownor claimed only in a 
separate application. If the invention does not admit of illus- 
tration by drawing or model, amendment of the specification 
is permitted upon proof satisfactory to the Commissioner that 
the matter covered by the proposed amendment was a part of 
the original invention." 

After the invention is decided to be patentable, 
either by the Examiner, the Board, or the Commis- 
sioner, or on appeal to the courts, and the patent is 
ready to issue, the patent may be withheld and the 
case put into interference with another pending appli- 
cation or a patent for the same thing. Or a caveat 
may be on file which shows the same invention. In 
the case of the caveat, the person filing it will be noti- 
fied to file an application within three months, to be 
put in interference; failing in which, the first appli- 
cant's patent issues. 



!0 

The nature of an interference is stated in Part III., 
" Interference." 

I. WHAT IS AND WHAT IS NOT INVENTION UNDER 
THE UNITED STATES PATENT LAW. 

An invention is a substantive, tangible object or 
thing ~ possessing originality; the word itself means 
some object or thing that is new. The fathers of the 
patent law have constructed, therefore, the statute to 
read : 

" Any person who has invented or discovered any new and 
useful art, machine, manufacture, or composition of matter, 
or any new and useful improvement thereof . . . may obtain 
a patent therefor." 

An invention, therefore, under the patent act, is a 
product that is new and useful. 

As to Novelty : The invention may be original and 
new with the inventor ; he may know of nothing like it 
at all; he may conscientiously swear that he is the 
first, original and sole inventor of it; but the prior 
patents in this country or abroad may disprove his 
oath; publications here or elsewhere may show the 
contrary ; or, removed from his locality, the invention 
original with him, so far as he knows, may have been 
in public and common use or on sale for more than two 
years prior to his application for a patent ; and any of 
these facts defeat his right to a patent, and would in- 
validate his patent if granted. 

If the invention be an improvement on an existing 
invention, the improvement must show itself to be a 
new and useful addition to that existing invention, and 
must add something of value to it. If it be a combin- 
ation of known devices, the thing as a whole must be 
new in result. If it be a reconstruction of an old in- 



11 

vention, or of several of them, the reconstruction must 
evince novelty and utility in effect. If the invention 
be a new process or method of doing an old thing not 
obvious from the old, it is a patentable invention. If 
the process consists in adding a new step to the old 
mode of doing a thing, the new step must confer im- 
proved results to make the process patentable inven- 
tion or discovery. A mere cheapening of the product, 
either in its construction or process of making, is not 
invention. The substitution of one device or process 
for another is not invention, unless it radically changes 
the character and working of the device or process. 
The arranging upon one frame, or as a whole, of a 
number of different things, does not constitute inven- 
tion unless such arrangement affects the character and 
operation of each, and makes them work together (co- 
operate) as a whole. A machine may be novel as a 
whole, or in its parts, or both, and is so patentable in- 
vention. 

As to Utility : An invention is useful when it is 
neither harmful nor frivolous. If an invention is mor- 
ally or physically hurtful, it is not patentable; and if 
it be trivial or frivolous it cannot be patented. Inven- 
tions of food adulterations would not be patentable, 
for the double reason of being morally and physically 
hurtful ; and inventions of so-called perpetual motion, 
or converting iron or brass into gold, as for example, 
under the old alchemists' arts, could not be patented 
because trivial and frivolous in view T of their utter ab- 
surdity and impossibility of accomplishing practical 
results, so far as present human knowledge extends. 

Schemes of advertising, book-keeping, transacting 
business, and the like, are not patentable invention; 
they may be, however, subject matter for copyright; 



12 

but mechanical advertising devices, modes of binding 
or constructing books, mechanical accountants, com- 
puters, and the like, are patentable. Anything evincing 
originality in mechanical skill or chemical investiga- 
tion, and possessing the requisites of novelty and use- 
fulness, is patentable invention or discovery. 

A machine for doing a given thing is an invention ; 
the product of that machine is an invention ; the pro- 
cess carried on by the machine in making the product 
is an invention, and each, if new and useful, is patent- 
able. If a new way of making an old product be dis- 
covered, it is the way, method or process, and not the 
product, that is new. The product is the same however 
produced. 

If one finds he can make wrought nails with a pin 
machine, it is not invention, because the pin machine 
inventor is entitled to all the uses to which his machine 
can be put. This is obvious if one remembers that a 
water-proof coat may be as protective against cold as 
it is against rain, and no one would consider himself 
an inventor in realizing this fact. 

An invention, therefore, stating the case again, is 
something that is new in all or some of its parts, and 
it is patentable when all or some of such parts are new 
and useful, and they must be both new and useful. 

II. WHO IS AN INVENTOR. 

An inventor is any person, male or female, youth or 
adult, native or foreigner; who has invented or discov- 
ered something new, original, not before known or 
used. The inventor under our law must be the actual 
creator or maker of the thing sought to be patented. 
He or she may invent the thing outright, or may give 
the idea and principles to others to put into form, and 



13 

yet be just as truly the inventor. He who puts the 
ideas or principles of others into such form is the mere 
mechanic or chemist, and not the inventor ; he may 
even experiment in testing the correctness of these 
ideas or principles of others, and yet be the mere me- 
chanic or chemist, and not the inventor ; but as soon 
as the mechanic or chemist varies the original ideas or 
principles, changes them, or adds others of his own in 
order to produce the desired result, the original ideas 
and principles having failed of accomplishing such re- 
sult, he becomes either the sole inventor or else a joint 
inventor with the original, and the invention is the 
joint product of the two. 

Any number of persons may contribute to the mak- 
ing of an invention, but each must actually invent 
something of the whole to be raised to the dignity of 
an inventor. If the invention is composed of parts 
which are capable of manufacture and sale by them- 
selves, and such parts are invented outright by differ- 
ent ones of the several contributors to the whole, the 
invention, as a rule, will be most safely patented in 
parts, each contributor taking a separate patent for so 
much as he has invented. If each part is necessary to 
the making of a complete machine, and such parts are 
separately invented with a view to their fitness to the 
others, and to the whole, and have no value outside of 
that, then the invention as a whole is a joint one, and 
must be protected by a single patent for it. The prime 
essential in supporting a joint invention is, not that 
each contributor made a part of the whole, but that 
such part was necessary to make the whole operative, 
and it was inoperative without it. The contribution 
must be of the essence of the complete thing. 

From these facts, it is obvious that a mere money 



14 

interest in an invention does not elevate the person 
holding it to the dignity of an inventor. Regard for 
the sanctity of an oath, also, ought to open the eyes of 
such persons to this fact, since no patent can be 
granted except upon the oath of the persons applying 
for it that they are the original, first and joint inven- 
tors of the thing sought to be patented ; or in the case 
of a single applicant, he must be able to swear that he 
is the original, first and sole inventor. Whatever inter- 
est a person other than the actual inventor may have 
in an invention must be held by assignment or license 
from the inventor. 

There is no natural right to an invention, and it is 
open to everybody until the inventor avails himself of 
the monopoly or privilege of a patent ; and no redress 
can be had prior to the grant of the patent for the use 
of an invention. The grant of the patent, however, 
stops all unauthorized manufacture, use, and sale of 
the patented invention. However, if before the grant 
of the patent, the inventor sells his machine or what- 
ever he has invented, or allows any person to make, 
use, or sell it, that particular machine or whatever 
else it is, may be freely used and sold, but no others. 

The rights, therefore, of the inventor and of the 
holder of an interest in the invention are only maintain- 
able when duly acquired by process and form of law. 

A patent or any part of or interest in it may be as- 
signed by law. The assignee's right is co-extensive 
with that of the inventor for the respective interests. 
The assignee's right may be exclusive, or it may be ter- 
ritorial, or undivided ; in other words, the assignee may 
purchase or acquire the entire right, or the right in a 
certain territory or portion of the country, or a right 
expressed by such terms as one-fourth, or one-half, and 



15 

the like, and in this last case it is an undivided right, 
making him equal to that extent with the inventor, 
and wholly beyond his control in the working or use 
and disposal of that right, unless the conveyance other- 
wise expressly ordains. 

A patent can be issued to an inventor or to his as- 
signee of the whole, or to the inventor and the assignee 
of an undivided right upon written request and author- 
ization to the Commissioner of Patents to that effect. 

III. PATENTABILITY. INTERFERENCE. INFRINGE- 
MENT, 

The compass of this book is too small to admit of the 
discussion of the question of patentable subject matter 
in its various aspects of novelty, equivalence, utility, 
substitution of parts and materials, change of form, 
etc., but enough has been said in Part I. to indicate 
generally what is and what is not patentable. But 
some propositions, as it were, may be briefly stated. 

Patentability : An invention is patentable if it be 
new and useful. It is not new if it be simply an equiv- 
alent of some other known thing for the same purpose, 
and with the same result. 

It is not patentable if it be a mere substitute of one 
of the known principles of mechanics or force, or 
chemistry, for another, without new function or result. 

It is not patentable if it be simply a chauge of form 
without effecting change in operation or result. 

A new combination and arrangement of old things 
in which the thing as a whole gives a new or improved 
result is patentable. 

The addition of a new element to an old combina- 
tion, the new element infusing a new mode of operation 
into or effecting a new or improved result in such com- 



16 



bination, is patentable, and the new element i« <m. 
ceptibleof a claim or patent of itself , ?Tb e n the" 
natnre of an entirety, or capable of use by itself 
It is not patentable invention to take several things 

hinTifT 7 T, hineS and ° rganize them int ° Ma- 
chine, if the result is merely the sum of the results of 

said several things rather than a new machme 

termsThe^f/^ 081 " 0118 mendy State in «ene«l 
term S the pith f concurrent decM and 

uniform practice under our several statutes; but from 
the very nature of the cases decided, there are' and must 
be exceptions, and such exceptions occur only as the 
facts show improvement, material benefit, greater 
utility and the practical accomplishment of what had 
theretofore been crude, imperfect, useless and undesir- 

• ^ te £ f f°^ e: Aninvention may be patentable, but 
in the Patent Office a rival claimant may-appear. The 
law has established the machinery of an interference 
proceeding in such case to determine who is the prior- 
inventor, and thereby entitled to the patent. To en- 
title one to the patent in such case, he must prove by 
regularly taken evidence, under the ordeal of cross-ex- 
amination, not only that he was the first to think of 
(conceive) the invention, but to put it into practical or 
demonstrative form. An applicant for a patent can 
contest the right of a patentee to the same invention, 
and if he prevail a patent will be granted to him also. 
The theory of the law is that the first inventor shall 
receive the patent, and all its powers are directed to 
this proper end. 

Infringement : In view of what has already been 
said as to patentable, subject matter, it is apparent 
that patents must be granted that will overlap one an- 



17 

other. The prior patent has presumably and on its face 
the best right, and subsequent patents in the same line 
of invention become sufbject to it, and to one another, 
chronologically. It happens thus that there are infriy\g- 
ircgr patents." The Patent Office determines the question 
of interference, but has no jurisdiction of infringement. 
An invention maybe a direct and obvious infringe- 
ment of an existing patent, and yet be patentable over 
it. The patent, however, for the infringing invention 
must forever remain an infringement of the right of 
the prior patentee ; and while the prior patentee can 
stop the manufacture, use, and sale of the infringing 
invention, he cannot himself manufacture, use, or sell 
the said infringing invention. In this consists the 
equity of the law. The parties can accommodate by 
mutual license or reciprocal assignment. 

Infringement relates to what is claimed in the claims 
of the prior patent, and it may as well here as else- 
where be noted, that it is the thing claimed in the 
claim following the specification that is the invention 
covered by the patent. 

If the subsequent inventor, in point of date of filing 
his application, alleges that he is the true and first in- 
ventor of the thing claimed, the case is one of inter- 
ference to be decided by the Patent Office, if either 
party is simply an applicant, without a patent; whereas 
if he cannot sustain his claim to prior invention, the 
case is one of infringement, to be decided by the courts. 

The courts have jurisdiction also, of interfering 
patents. 

An improvement on a patented thing may be patent- 
able, and yet none the less a direct infringement of the 
claims of that patent. 



18 



IY. PATENTS. DISCLAIMERS. REISSUES. 

The word "patent" has come to have a narrow 
meaning, and is largely used to designate inventions or 
discoveries in the arts and sciences for which the gov- 
ernment has issued its letters-patent. The grant is 
made after examination as to novelty and utility ; is in 
the name of the United States of America, signed by 
the Secretary of the Interior, countersigned by the 
Commissioner of Patents, and sealed with the seal of 
the Patent Office. The term is for seventeen years, but 
is limited by the term of that prior foreign patent for 
the same thing and to the same party, having the 
shortest term to run. 

A patent is valid on its face, and is evidence of the 
facts of invention, inventorship, novelty and utility. 
If its novelty be impaired in part, it is valid for the 
rest ; thus, if one of several claims be found invalid, 
the patent is good for the remainder, and the invalid 
claim can be removed by disclaimer. 

Disclaimer: Whenever it be discovered that the 
claims are too broad, they can be corrected by dis- 
claimer. If, however, it be shown that the patent was 
granted upon a false oath, and the patentee is not the 
real inventor, the whole grant is invalid, and cannot 
be corrected ; it is a fraud, not by the government, but 
perpetrated upon it. 

Reissue : If the patent be inoperative by reason of 
an insufficient or inaccurate, or incomplete specifica- 
tion (or claim), it can be corrected by reissue, provided 
no opposing rights have vested in view thereof. 

To entitle a patentee to a reissue, he must show 
specifically wherein his patent is inoperative, or defec- 
tive, and that such inoperativeness or defect occurred 



19 

by inadvertence, accident, or mistake, and without 
fraudulent intent. The courts presume that the er- 
rors will be seen upon first glance at the patent, and 
insist that the application for reissue shall be imme- 
diate. 

A reissue does not extend the life of a patent. Con- 
gress alone can do this. 

Patents should express in the grant all foreign pat- 
ents taken out for the same thing, and the oath in the 
application must state what if any foreign patents 
have been obtained, and if none have, been obtained 
that fact must be stated. 

After an application for a patent has been allowed, 
six months are given in which to pay the final fee, and 
this time should be utilized in getting ready the foreign 
applications. The patent will issue on the third Tues- 
day after the Thursday on or before which the final fee 
is paid. Patents are issued and date on Tuesday of 
each week. 

After a final fee is paid the issue of the patent can- 
not be stopped by the applicant, except by abandon- 
ment of the application. At any time prior to the 
Tuesday on which the patent is to date, and before the 
signing and sealing of the same, the patent may be 
withheld by the Patent Office for rejection or interfer- 
ence. 

In case of the death of the inventor, the patent or re- 
issue may be applied for, and will be granted to the ex- 
ecutor or administrator. 

V. DESIGNS. 

To entitle one to a patent for a design, it must ap- 
pear to be new and useful. Designs embrace new con- 
figurations or shapes where the object aimed at is artk- 



20 

( ic rather than mechanical. The function or opera- 
tion is a silent, indeed an excluded factor in designs, 
and ornament or beauty is the essential rather than 
convenience or adaptation. Carpet patterns, spoon and 
fork shapes, jewelry configurations, mouldings, stove 
castings, glassware, and the like, afford fruitful fields 
for design patents. A new mechanical construction, if 
it have new effect or function, is not subject for a de- 
sign patent, no matter how beautiful it may be, for it is 
mechanics that is involved in its production, not art. 
Artistic effect is thus the basis and foundation of the 
statutory protection for designs. 

The one entitled to receive a valid design patent 
must conform to the requirements as to inventorship 
mentioned under Part II. 

VI. TRADE-MARKS. LABELS OR PRINTS. COPY- 
RIGHTS. 

Under the law only such trade-marks can be regis- 
tered as are used in commerce with foreign nations or 
the Indian tribes. State laws are usually sufficient to 
protect citizens of the same state from unlawf ul use of 
each other's trade-marks, but registration in the Patent 
Office is useful as a sort of public record notice of the 
facts of adoption and ownership. Trade marks can 
be registered irrespective of the length of time they 
have been in use. On the other hand,:labels and prints 
must be registered before they are used at all, other- 
wise the registration, upon proof of prior use, is irrem- 
mediably invalid. This difference is statutory, and 
grows out of the fact that the law relating to the re- 
gistration of labels and prints is cut out of the 
copyright laws. Trade-marks and labels and prints are 
registrable in the Patent Office. 



21 

A trade -mark is a purely arbitrary affair, a growth 
of the mind, not gathered from the books or any quality 
of the article upon which it is used. A word newly- 
coined by the user may be a lawful trade-mark; so 
also may be an artistic representation or device, a fac- 
simile signature, a monogram; but a lawful trade- 
mark must be an original production to which the 
owner's right is apparent, and which could in not com- 
mon reason be just as truly appropriated by natural 
right by another. 

A label or print, (for the rule is that there is practi- 
cally no difference between them) is any of the com- 
mon means employed to designate the character, con- 
tents, nature, name, or ownership of the various 
articles of trade or commerce. It is usually a bit of 
paper containing the name of the article, its qualities 
or properties, place, and source of production. The 
word "label" itself carries on its face its own explan- 
ation. A label must not be of such arbitrary charac- 
ter as to amount to a trade-mark, although a registered 
trade-mark may be placed upon a label. * 

Copyrights are secured in the office of the Librarian 
of Congress, and the provisions of the statute extend 
to books, pamphlets, maps, engravings, and works of 
art. Application therefor must be made before actual 
publication, and subsequently two copies of the best 
edition or issue are required to be deposited to perfect 
the registration. 

VII. CAVEATS. 

A caveat is an instrument of the law which enables 
a United States, but not a foreign inventor to file in 
the Patent Office a drawing and description of an in- 
complete or unfinished invention, which shall entitle 



22 

him to notice of the filing of any application for pat- 
ent for the same invention within one year after the 
date of the filing of his caveat. As already said on 
page 9, if such application is filed, the caveator is 
given three months in which to file an application for 
patent for his invention for the purpose of contesting 
the question of prior right to the invention as between 
himself and the person filing the application which 
called forth the caveator's application. 

A caveat is not in and of itself evidence of an incom- 
plete or immature invention ; that point is a subject of 
proof and not of presumption. 

A caveat may be renewed year by year, but the Pat- 
ent Office has held that its effective date is not that of 
the first filing, but that of the last renewal. 

A caveat affords no legal protection for an invention 
excepting as a notice to the government of the posses- 
sion of such an invention. It cannot be sued upon ; 
and the invention may be manufactured with impunity. 

In order to protect an invention it is far better to 
patent so much of it as is complete, and then take out 
other patents for the improvements that may be nec- 
essary, rather than to wait till the invention is per- 
fected in all of its details. But circumstances, such as 
the necessity of secrecy, may indicate the advisability 
of a caveat at some times. 

VIII. GENERAL OBSERVATIONS. 

As already stated on page 14 there is no inherent 
natural right to the exclusive manufacture, use and 
sale of an invention; but the right is created and 
secured by statute, and can be acquired only upon 
compliance with the statute. While an application 
for a patent is pending the invention can be made 



23 

and sold, and marked " Patent applied for," but this 
affords absolutely no protection against infringers. 
After the patent is granted, then the patentee is in 
possession of means for asserting and defending his 
exclusive right to the manufacture, sale and use of 
his invention, but even then he must mark his goods 
"■■Patented" and give the date of his patent, plainly 
exhibited on the goods, or where this is not prac- 
ticable, he must give the same information on pack- 
ages containing the goods. In other words, he must 
put his goods on the market with the information 
as to the fact and date of patenting expressed on them. 
This should be done also of designs. As to trade-marks, 
labels or prints, and copyrights, the fact and date of 
their registration must be plainly exhibited upon them. 
As to trade marks, the statute does not specifically 
prescribe any form of notice of registration. 

As to labels, the notice, according to a recent decis- 
ion, must be in either of the following forms : 

(1) "Entered according to act of Congress in the year . 

by in the Patent Office at Washington," or 

(2) "Copyright, 18— by .'•? 

A patent or registration is on its face evidence of 
ownership and validity, but both facts may be contro- 
verted in court. The government does not guarantee 
any right, but simply issues its letters-patent or certi- 
ficate as a prima-facie good and valid deed for the 
right therein stated. The grantee sets up a claim, and 
the grantor finds the claim just according to law and 
issues its letters-patent or certificate therefor, and there 
the duty and responsibility of the government end. 

Purchasers of patents, thus it will be seen, should 
investigate the validity of their patents before em- 
barking in manufacturing. Indeed, patents ought 



24 

never be bought without a rigid scrutiny as to their 
validity. , 

With respect to the Convention for the Protection of 
Industrial Property, I hardly like to risk my reputation 
on a statement. Apparently the inventors of the 
United States receive no benefit from it. I have al- 
ready marked out the course safest to pursue, namely, 
wait until the United States application is allowed, 
and then arrange to file the foreign patents so that 
they will date the same as the United States patent. 
This, almost always, can be done. In connection with 
this Convention the Commissioner of Patents published 
in the Official Gazette of October 18, 1887, (Vol. 41, 
pages 355-356) a paper which he states was u Prepared 
as a general reply to inquiries to the Patent Office " on 
that subject. The following is the essential portion of 
this paper of the Commissioner: 

u No intelligent consideration of the convention is possible ex- 
cept on the oasis of the European patent systems to which it is 
adapted. The substance of the convention is in Article 4. This 
article proposes that patents shall bear a common date in the 
several contracting states, so that neither of them may be 
vitiated by the prior grant of another. Proceeding on the sup- 
position that the date of depositing the application is the date 
from which protection runs, which is substantially true of 
European patents generally, it allows an applicant in any state 
a period of six months from the date of tiling his application, 
within which he may file it in any other state, and declares that 
during that period he shall have priority, and that his rights 
shall not be invalidated by any publication or public use by 
other parties occurring during the interval. The result of this 
arrangement is that all applications thus made under the terms 
of the convention are treated as if tiled at the same time in all 
the states, and the patents granted upon them bear the same 
date. .None is anterior and none can vitiate another. The 
period of six months is extended to seven months for countries 
beyond the seas. This provision is quite outside of the United 



25 

States system, since in it priority in making an application is 
of comparatively little moment and does not determine the 
grant or its date. In applying it to our system there appears 
to be no benefit to an alien applicant, except that of an earlier 
date of filing in case an interference arises. It cannot possibly 
lead to the grant of a patent of simultaneous date with that 
granted at home, because the date of the grant is not governed 
by that of filing the application ; and it leaves the patent, when 
granted, subject to the restrictions as to its term imposed by 
section 4887 Revised Statutes. American inventors desiring 
protection in the other contracting states must deposit their 
applications within seven months from the date of filing them 
at home, if they are to avail themselves of the benefit of the 
treaty. But since foreign patents bear the date of the appli- 
cations on which they are granted, the inventor takes the risk 
of thereby having his home patent abridged in its term by the 
existence of a prior patent abroad. 

" Other practical difficulties arise in attempting to adapt the 
terms of the convention to the conditions of the American 
patent system. The secrecy maintained in the United States 
Patent Office regarding an invention described in a pending 
application is unveiled by reason of the disclosure abroad, 
creating conditions which may greatly embarrass the inventor 
and delay the grant of his patent. An American patent granted 
to an alien who has previously taken out his patent abroad is 
in most cases greatly restricted by reason of the rigid examina- 
tion into novelty which the application undergoes in this 
country. Often it is for a mere fraction of the alleged invention 
covered by the foreign patent, and serious questions may arise 
as to the identity of the two. 

" The patent systems of Europe and the United States differ so 
widely both in principle and practice that any treaty arrange- 
ment for harmonizing them is apparently impracticable. The 
present convention, looked at from either side, appears to offer 
no advantage either to aliens wishing to protect their inven- 
tions in this country or to citizens of the United States seek- 
ing the same protection abroad. As between the states of 
Europe, with their closely-assimilated patent systems, it may be 
of value; but it fails entirely when applied to ours. 

"Regarding trade-marks, there is no such wide divergence be- 

ween our system and those of European states as to make a 

treaty concerning them incompatible. Nevertheless there is 



28 

doubt as to the feasibility of carrying out some of the provis- 
ions of the present convention relating to them. The provision 
of Article 6, that every trade-mark regularly deposited (regis- 
tered) in one of the contracting states shall be admitted to de- 
posit, and so protected, in all the others, seems to have the 
effect to make the laws of this country subordinate to those of 
every other contracting state, and to bind the Commissioner 
of Patents to govern his conduct by the practice of other coun- 
tries and the adjudications of other tribunals than those of the 
United States. The provision of Articles 9 and 10, for seizure 
of goods bearing illicit trade-marks, though consonant with 
the laws of many countries of Europe, is at variance with 
American trade-mark law, and can only become operative by 
virtue of federal legislation. 

" In order to carry out the provisions of the convention the 
action of Congress will be necessary in several particulars, and 
some changes will be required in the rules and practice of the 
Office." 

The following countries adhere to this Convention, 
viz : — The United States of America, Belgium, Brazil, 
France, Guatemala, Italy, the Netherlands, Portugal, 
Salvador, Servia, Spain and Switzerland. , 

HINTS TO INVENTORS. 

Some years ago I published and circulated freely a 
circular embodying substantially the following points, 
and I have reason to believe it will not be amiss to re- 
produce it here. 

1. In inventing anything, be it a machine, compound, 
process, or other thing, be particular in preserving some 
evidence by means of sketches, models, or written de- 
scriptions, with the dates carefully marked, and, if 
possible, attested, of the first thoughts or conception, 
and experiments in the matter. You may require such 
evidence in case of interference in the Patent Office, or 
trials in court. 



27 

2. Preserve all your experiments in their original 
shape if possible. These are the best facts in develop- 
ing the history of your invention in case of litigation. 

3. When your invention has arrived at that state of 
perfection that it requires only the knowledge of one 
skilled in the art to which it appertains to put it into 
marketable shape, then apply for a patent. 

4. Do not attempt to prepare your own papers for the 
application for a patent. 

On this head I will simply quote Eule 17 of the Rules 
of Practice in the United States Patent Office : — 

" 17. Any person of intelligence and good moral character may 
appear as the agent or the attorney in fact oi an applicant, 
upon filing a proper power of attorney. As the value of pat- 
ents depends largely upon the careful preparation of the speci- 
fications and claims, the assistance of competent counsel will, 
in most cases, he of advantage to the applicant ; hut the value 
of their services will be proportionate to their skill and hon- 
esty, and too much care cannot he exercised in their selection. 
The office cannot assume responsibility for the acts of attor- 
neys, nor can it assist applicants in making selections. It will, 
however, be unsafe to trust those who pretend to the posses- 
sion of any facilities except capacity and diligence tor procur- 
ing patents in a shorter time or with broader claims than 
-others." 

The rule might have added, that, in view of the 
strictness and technical character of the practice in the 
Patent Office, and the current tendency of the courts to 
construe patents narrowly so as to limit them to just 
what is shown and described if there be in the patents 
any hint in that direction, it is now even more than 
ever necessary to exercise great care in selecting skill- 
ful and honest attorneys. 

5. After the application is allowed, pay the final gov- 
ernment fee ($20) at once, and thereby save possible de- 
lays (as by interference, etc.,) in the issuing of the let-. 



28 

ters-patent ; but if it is intended to take out foreign 
patents, this payment should be delayed, as a prior 
patent or publication elsewhere is a bar to the grant in 
some countries. 

6. Never buy a patent, nor any interest therein, with- 
out first obtaining a knowledge of its validity, and 
whether or not the title is clear. Pursue the same 
course in purchasing patents as you would with respect 
to real estate or other property. 

7. In employing a patent solicitor it is well to re- 
member that one doing business in Washington has 
many facilities not possessed by those in other cities, 
not the least of which is the fact of his daily presence 
in the Patent Office, by reason of which, and his per- 
sonal contact and interviews with Examiners and 
other officials, he is enabled to avoid most of the delay 
incident to correspondence. 

SUMMARY AND ADVERTISEMENT. 

Patents are granted for 17 years to the first and orig- 
inal inventor or discoverer of any new and useful art, 
machine, manufacture, or composition of matter, or 
improvement therein. In case of the death of the in- 
ventor, the application may be made by or the patent 
granted to the executor or administrator. Government 
fees, $15, payable on making the application, and $20 
within six months after the allowance of the applica- 
tion. Agency fee, generally $25, in advance. Models 
are no longer required to be filed with applications for 
patents, but they are sometimes called for by the Ex- 
aminers in the examination of the case. 

Designs : Patents are granted for 31, 7, and 14 years 
for new and original designs or configurations in metal, 
wood, stone, cloth, and other manufactures, and for 



29 

busts, statuary, etc. Government fees, for 3i years, $10; 
for 7 years, $15; for 14 years, $30. Agency fee, $10 to 
§20, in advance. 

Reissues, to cure defects in existing patents, can be 
obtained on payment of a Government fee of $30. 
Agency fee, usually $30, in advance. 

Disclaimers : Whenever a patent is found to be too 
broad, or to cover more than the patentee is legally en- 
titled to as the first inventor, he, his heirs or assigns of 
any interest, may enter a disclaimer of that portion to 
which the patentee is not entitled, whereby the defect 
in the patent is cured without the necessity of reissu- 
ing. Government fee, $10. Agency fee $15. 

Caveats for experimental or incomplete inventions 
can be filed in the secret archives of the Patent Office, 
remaining in force one year, on payment of a Govern- 
ment fee of $10. They entitle the person rilling them 
to a notice of any application covering a similar inven- 
tion made in the Patent Office within the year. Caveats 
may be renewed yearly by paying the Government fee 
of $10. For preparing caveats the usual agency fee is 
815. 

Trade-marks are registrable for 30 years on payment 
of a Government fee of $25. Agency fee, $10 to $20. 
Twelve copies of the trade-mark are to be furnished by 
the applicant ; or he may make a drawing of the trade- 
mark and the Patent Office will furnish photo-litho- 
graphic copies ; but this latter is only possible when the 
drawing is made solely in black. 

The act of March 3, 1881, limits the registration of 
trade-marks to those used in commerce with the In- 
dian tribes and foreign nations. Trade-marks regis- 
tered under the act of July 8, 1870 (which act has been 
declared by the 17, S, Supreme Court to be unconstitu- 



30 

tional and registrations thereunder worthless), can be 
re-registered under the act of March 3, 1881, without 
additional Government fee. Agency fee, $10. 

Labels or prints for use on various commodities, can 
be registered in the Patent Office on payment of the 
Government fee of $6 and furnishing seven copies for 
use in the Patent Office and my office. The registration 
is in force for 28 years. Agency fee, $5. 

For registering copyrights, I charge $5 in full. 

Preliminary Examinations : Before applying for 
a patent, I advise that an examination be made to as- 
certain if the invention is probably new and patent- 
able. For this purpose send me a sketch, or better, 
a model and description of the invention, and $5, 
and I will make such examination and report at once, 
with all necessary information as to the state of the 
art, giving my opinion as to the patentability of 
the invention. This examination, however, is not 
guaranteed to be exhaustive of the state of the art 
to which the invention relates, for the following 
reasons : 1. The fee charged is not sufficient to cover 
the time necessary to make it such. 2. The accessible 
records in the Patent Office from which it is made, 
namely, the classified drawings in the Draftsman's Di- 
vision of the Patent Office, are not always reliable as 
complete exhibits of the classes of invention, because 
drawings are constantly being removed therefrom for 
use throughout the Patent Office. 3. The said records 
are not complete to date. 4. Publications and foreign 
patents are not included, they being recognized by the 
profession as subjects for separate examination. Obvi- 
ously, therefore, this examination can only give a prob- 
able result, but it is generally reliable. 

This examination is made with the utmost care, and 



31 

with a sincere purpose and earnest effort to obtain all 
the information necessary to enable one to determine 
whether or not the invention is patentable, subject, 
nevertheless, to the herein named qualifications. 

The question of infringement is not investigated in 
such preliminary examinations, and only considered 
incidentally, if at all, it not necessarily being involved 
in the question of patentability, and is at all times 
a subject for separate search. Caveats and pending 
applications being kept in the secret archives of the 
Patent Office, for that reason cannot be examined. 

If the inventor decide after such report to make an 
application for a patent, he will send the first Govern- 
ment fee ($15) and I will prepare the case. 

I prepare all the papers of applications and forward 
them to the applicant for inspection and execution. 

I give personal attention to all matters intrusted to 
me, and guarantee prompt and faithful service. 

Validity, assignment, and other searches carefully 
made, at reasonable rates for time and labor. Assign- 
ments, licenses, agreements, etc., prepared. Interfer- 
ences conducted. Foreign patents procured. 

I beg leave to call attention to the following, viz: I ask 
but one fee of an applicant for a patent, and this covers 
the preparation of the papers and drawings of the 
case and its prosecution if rejected; and this fee will 
be agreed upon before starting the case. No extra or addi- 
tional fee is demanded ordinarily, shoidd the case require 
amending. 

For conducting appeals and interferences, extra fees 
will be charged, as may be agreed upon. 

The appeal fees fixed by law, and charged by the 
Patent Office, are $10 to the Board of Examiners-in- 
chief, and |20 to the Commissioner of Patents in per- 



32 

son. These fees apply alike to applications and in 
interference cases. The agency fees vary, and are fixed 
by mutual agreement between the client and his attor- 
ney before the appeal is taken. 

Interference cases end with the Commissioner, but 
applications for patent, when refused by the Commis- 
sioner, are appealable to the Supreme Court of the Dis- 
trict of Columbia. Failing to get the patent by any 
of these means, recourse may be had by bill in equity. 
Costs vary with the size of the record, etc. 

The costs of an interference vary with the nature of 
the case, and the kind and quantity of opposition. The 
record (testimony, etc.) and briefs must be printed. 
Each party to an interference, and to all appeals, bears 
his own costs, and has no recovery from his opponent. 

FOREIGN PATENTS. 

Foreign patents possess a two-fold value : 1st. If ap- 
plied for before the grant of the United States patent 
as hereinbefore explained, they prevent some one either 
here or abroad from pirating the invention and secur- 
ing the foreign patents in his own name or right, as 
he can do in most foreign patent-granting countries ; 
and 2d. It frequently occurs that patentees are able to 
sell their patents at good figures. Even should the sale 
amount to simply a fair profit on the cost of taking 
out the patent, the patentee is just that much clear 
money in pocket. 

In all foreign countries excepting Germany, Norway, 
Sweden, and Denmark, no examination is made such 
as here, but the patent is granted as applied for. As a 
rule — to which there are several exceptions— the patent 
takes its date from the day of application, though the 



33 

actual issue of the patent is delayed as long as nine 
months and more. 

Again, in all foreign countries excepting Canada, the 
life of the patent is subject to annual taxes; and also in 
many coimtries to a provision requiring a tk working " 
of the invention in the country. This " working " is 
surrounded by many legal technicalities in the various 
countries, but as a rule, if the manufacture of the ar- 
ticle be begun in the country, that fact, and the pay-' 
ment of certain fees will satisfy usually the law. 

All foreign countries, except France, permit the im- 
portation of the patented articles; and under the pro- 
visions of the Convention for the Protection of Indus- 
trial Property, the countries adhering thereto may 
import freely from one another. 

Foreign patents in or on their grant express the 
terms and conditions on which the letters-patent are 
granted, and thus the grantee of a foreign patent, by 
the instrument itself, is fully advised as to what are 
the duties devolving upon him in order to keep alive 
the patent. Such patents notably state the amount of 
taxes to be paid and when payable. If these taxes are 
transmitted through my agency, I add a fee to each 
payment, varying from $5 to MO in different countries. 

It would serve no useful purpose to give all the de- 
tails concerning foreign patents, and hence I deem it 
necessary only to give a tabulated statement which ex- 
plains itself. The costs mentioned include both agency 
and government fees, and the first taxes. 

Following is the table :— 



EUROPE. 

Maximum Minimum 

Country. term of Cost. 
Patent. 

England ; 14 years, Provisional and completing 

same $60 00 

Complete application at start 60.00 

Austria 15 years, Patent— 1 year 60 00 

Hungary 3 years 85.00 

5 years 110.00 

10 years 235.00 

35 years 450.00 

Belgium 20 years, Application for Patent 40.00 

Application for Certificate of 

Addition 40.00 

Denmark 10 years, Application for Patent 70.00 

Finland 15 years, Application for Patent.200 00 to 450.00 

France 15 years, Application tor Patent 65.00 

Application for Certificate! of 

Addition 55.00 

Germany J5 years, Application for Patent 60 00 

Application for Certificate of 

Addition 60.00 

Greece 15 years, Only granted by special leg- 
islation . . 300.00 to 2,600.00 

Italy 15 years, Application for Patent— 1 

year 55.00 

Application for Patent for 

full 15 years 120.00 

Certificate of Addition 60.00 

Luxemburg 15 years, Application for Patent 50.00 

Application for Certificate of 

A ddition 50.00 

Norway 15 years, A pplication for Patent 60.00 

Application for Certificate of 

Addition 60.00 

Portugal 15 years, Application for Patent— 1 yr. 125.00 

Application for Patent for 

full 15 years 250.00 

Application for Certificate of 

Addition— 1 year 100.00 

Russia 10 years, Paten t of Invention— 3 yrs. . 150.00 

5vrs. . 175.00 

10 yrs. . 350.00 

Patent of Importation 1 yr . 150.00 

3 yrs. 200.00 

6 yrs. 260.00 

Spain 20 years, Application for Patent 70.00 

Application for Certificate of 

Addition 70.00 

Spain and Colonies.20 years, Application for Patent 80.00 

Sweden.... 15 years, " k * 90.00 

Application for Certificate of 

Addition 90.00 

Turkey 15 years, Application for Patent 175.00 

Application for Certificate of 

Addition 140.00 



35 

BRITISH COLONIES. 

Maximum Minimum 

Country. term of Cost. 

Patent. 

British India 14 years, Application for Patent $150 00 

British Guiana 14 years, " " 350.00 

British Honduras. 14 years, " " 225.00 

Canada 15 years, " " 50.00 

Cape Colony 14 years, " ". 140.00 

Ceylon 14 years, Application for Patent where 

English Patent has been 

obtained 175.00 

Ceylon 14 years, Application for Patent where 

n o English Patent has been 

obtained 230.00 

Hong Kong 14 years. Application for Patent 200.00 

250.00 
310.00 
210.00 
150.00 
200.00 
125.00 
125.00 



Jamaica 14 years, 

Leeward Islands. .14 years, 

Mauritius 14 y^ars, 

N atal ..14 years, 

New Foundland . .14 years, 

New South Wales.14 years, 

New Zealand 14 years, 

New Zealand 14 years, Application for Letters of 

Registration 150.00 

Queensland 14 years, Application tor Patent 125.00 

150.00 
175.00 
165.00 
150.00 
185.00 
130.00 
225.00 



South Australia . .14 years, 

St. Helena 14 years, 

StraitsSettlementsl4 years, " 

Tasmania 14 years, " 

Trinidad 14 years, " 

Victoria 14 years, " 

Western Australia 14 years, " 

SOUTH AMERICA. 

Argentine Repub. 15 yrs., Application for Patent— 5 yrs. 225.00 

Brazil 15 yrs. 

Chili 10 yrs. 

Ecuador 15 yrs. 

Peru 10 yrs. 

U. S. of Colombia. 20 yrs. 

Uruguay 15 yrs. 

Venezuela 15 yrs. 



MISCELLANEOUS. 

Hawaii 10 yrs., Application for Patent 175.00 

Mexico 10 yrs. " " 300.00 

Orange Free State. 15 yrs., Application lor Patent (with 

minimum tax) $800.00 to 3,800.00 



10 yrs. 


350.00 


15 yrs. 


470.00 




175.00 




300.00 




275.00 




350.00 


5 yrs. 


210.00 


10 yrs. 


275.00 


15 yrs. 


350.00 




425.00 


5 yrs. 


600.00 


10 yrs. 


1,100.00 


15 yrs. 


1,600.00 



36 



FOREIGN TRADE-MARKS AND DESIGNS. 

The registration of trade marks and designs is con- 
fined to those governments which extend like privi- 
leges to the others. Conventions or treaties for effect- 
ing such registrations exist between the United States 
and the following governments, namely : Austria-Hun- 
gary, Belgium, Brazil, France, German Empire, Great 
Britain, Italy, Russia, Servia, Spain, Switzerland, and 
the Netherlands, in addition to those adhering to the 
Convention for the Protection of Industrial Property 
mentioned on page 26, not included in the above list. 

The costs of registration vary largely in the different 
countries. From $25 to $50 w T ould be minimum fees. 



WILLIAM H. FINCKEL, 

Solicitor of United States and Foreign Patents, 

No. 637 F Street, N. W., 

Washington, D. C. 

P. O. Box 368. [Practicing since 1869.] 



MEMORANDA. 



MEMORANDA. 



MEMORANDA. 



Memoranda. 



MEMORANDA. 



Memoranda. 



MEMORANDA. 



Memoranda. 



JVIENIOR-ANDA. 



MEMORANDA. 



MEMORANDA. 



Memoranda. 



MEMORANDA. 



MEMORANDA, 



MEMORANDA. 






Memoranda. 



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